If the trademark owner is successful in a legal action against the trademark infringer / defendant, the Court may make the following orders against the infringer / defendant:
Damages / Monetary remedies
The Court may order the infringer / defendant to pay damages / monetary payment to the trademark owner to compensate the owner for losses suffered as a result of the infringement act or activity.
Court assesses damages or the amount of money payable to the trademark owner by the infringer / defendant based on these general guidelines:
There is no fixed basis on which damages / the monetary remedies must be calculated as these can depend on the particular circumstances of the case.
Both liability and quantum can be assessed at the trial where possible. A separate hearing is often needed specifically for assessment of damages.
The Trade Marks Ordinance (Cap. 559), laws of Hong Kong does not include any express provision relating to punitive damages. Only in limited circumstances, the Court can award punitive damages against the infringer.
If the trademark owner is unsuccessful in the legal action, no damages will be awarded. In such case, the trademark owner may have to pay the Defendant's legal costs.
Account for Profits
The Court can order the infringer / defendant to pay the trademark owner a sum equivalent to the profits the infringer has made from using the trademark like the profits made from selling or using the infringing goods.
Delivery up or destruction of infringing goods
The Court can order the infringer / defendant to deliver up to the trademark owner or such other person as the Court thinks fit of any infringing goods, materials or articles which are in the infringer / defendant’s possession, custody or control during the course of trade or business.
The Court can also order the goods, materials or articles to be forfeited or destroyed.
Final/ Permanent injunction
If the Court finds that the infringer/ defendant has committed the infringement act, a permanent injunction will be ordered to prevent the infringer from committing any further infringing act / activity. The infringer will not be able to continue their conduct without a licence / authority to do so from the trademark owner.
For legal advice or services on trade mark infringement or defence to trade mark infringement claim, please contact CHOW & CHEUNG [Tel: +852 2856 3799 or Email: cac@ccsn.hk]
www.ccsn.hk
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